The Software IP Report

Creating “Member” Webpages Held Not Patent-Eligible

By Charles Bieneman

Categories: Patent Eligibility, The Software IP Report

Patent claims directed to allowing “Internet users to communicate with members of a group” via “designated webpages” are not patent-eligible under 35 USC § 101, said the court in LLC v. Facebook Inc., No. CV 16-06473-AB (JEMx) (N.D. Cal. May 10, 2017).  Thus, the court granted the defendant’s motion for judgment on the pleadings under FRCP 12(c), dismissing a complaint for infringement of U.S. Patent Nos. 9,137,192 and 8,504,631.

The plaintiff’s own description of the claimed invention probably put the writing on the wall with respect to patent-eligibility:

this invention could serve groups of healthcare professionals by providing a searchable website through which potential patients, or “users” as described in the specification, could locate and communicate with doctors, or “recipients,” even if the professional is not active on the Internet.

That is, a doctor not active on the Internet could nonetheless have his or her own “homepage” with contact information and the like.

The court first rejected the plaintiff’s argument that the patent-eligibility question should be delayed until after claim construction. The claims here, the court thought, were straightforward and patent-eligibility would be unaffected by claim construction.

Under the first step of the Alice/Mayo test claims of both patents were directed to an abstract idea. Claims of the ’631 patent were directed to managing email messages sent and received via the claimed website to and from users who themselves lacked an online presence. The claims were directed to an abstract idea because they were no different than a process of looking up a provider in a phone book or directory, and then leaving a message after placing a call. The claim had “physical components of a server computer system, a telephone, and fax machine,” but the specification disclosed no technical details, and this generic subject matter did not save the claims.

Claims of the ’192 patent, directed to “designating Internet home pages for individual members of a group with individual Uniform Resource Locators (“URLs”) for each member’s home page” were likewise directed to an abstract idea. Specifically, the claims “provide[] a method for individuals to inquire about a business or professional, a practice long prevalent in our system, accomplished, for example, by a telephone and paper directory.” As with the ’631 patent, recitation of physical components did not save the claim.

Further, neither patents’ claims recited in inventive concept rendering the abstract idea patentable. Notably, the plaintiff attempted to argue that the patents claimed features not found in the prior art, but the court was able to respond by citing authority that “the patent eligibility inquiry under 35 U.S.C. § 101 at issue in the present motion is distinct from the novelty and obviousness inquiries presented by 35 U.S.C. §§ 102 and 103.” Further, the technical components of the claim were generic and not innovative. The patents described no technical details, and the crux of the plaintiff’s “inventiveness argument,” which was “that online and off-line users can communicate by using Plaintiff’s website” failed to “alter the underlying technology in any inventive way.”

Notable in this case was the dog that did not bark in the night, DDR Holdings, LLC v., L.PIf the plaintiff cited that case, the court did not mention it; one might have expected an argument that generating user webpages was, to use the catchphrase of DDR Holdings, “necessarily rooted in computer technology.” Perhaps the lesson of the present case is that DDR Holdings is recognized to have very limited teeth. Web inventions that can be easily analogized to long-standing manual processes, DDR Holdings notwithstanding, have an uphill patent-eligibility climb.